Today the High Court of Australia heard oral argument and refused Dr Stephen Thaler's application for special leave to appeal. Dr Thaler sought leave to appeal the decision of the Full Court of the Federal Court of Australia (Full Court) which found that DABUS, an artificial intelligence (AI) system, could not be named as an inventor of a patent and that the Patents Act 1990 (Cth) (Act) requires an inventor to be a natural person. We reported on this decision in April 2022.
This is the end of the road for a long running challenge to a decision of the Commissioner of Patents, who held that DABUS could not be named as an inventor. On appeal to the Federal Court, Justice Beach found that AI could be an inventor for the purposes of the Act. At the time, this was the first court decision around the world to hold that an AI system could be named as an ‘inventor’ for the purpose of a patent application. However, this decision was subsequently overturned by the Full Court. The refusal of the special leave application by the High Court means that this is the end of the road for Dr Thaler’s case in Australia. The Full Court’s decision that an AI system cannot be named as the inventor of a patent application stands.
In Dr Thaler’s special leave application, the High Court was asked to give its view on whether an inventor must be a natural person under the Act and whether sections 15(1)(a)-(d) of the Act are alternatives, with the effect that a person can be entitled to derive ownership of a patent from a non-human inventor. Dr Thaler’s reasoning was that section 15 of the Act provides that a patent may be granted to four classes of person, only one of which is an inventor.
In practical terms, Dr Thaler’s argument focused on the difficulty of identifying one or more human inventors when DABUS itself, as an AI system, decided upon and created a specific invention for itself, without human intervention or direction.
3 judges of the High Court considered the application for special leave and Dr Thaler’s application was refused with costs.
Australia continues to be in line with the current international treatment of AI where patent applications naming DABUS as an inventor have so far been rejected in Germany, Taiwan, the European Union, the United Kingdom and the United States. However, we note that appeals remain on foot in at least the United Kingdom and the United States.
The High Court has also definitively answered the question posed by Justice Beach in his primary judgment: ‘We are both created and create. Why cannot our own creations also create?’. By refusing this special leave application, the High Court has confirmed the Full Federal Court’s view that in the scheme and context of the Act the creation cannot itself be an inventor.
As lobbying efforts are likely to continue in the area of computer implemented inventions (following the High Court’s decision in Aristocrat – see our recent post here), it is possible that we may also see the legislature grapple with the question of whether the Act is suitable for current technologies, including how patent owners should identify a human inventor for AI created inventions.
Our experts, industry leaders, regulators and government explored key digital and cyber trends, regulatory insights and more at the Mallesons Digital Future Summit in November 2022. Read our takeaways or watch it on-demand here.
